But one who hires another to take a negative is not the author of it.1 41

43

[149] 4. Works Made for Hire. A work may be so far the product of the mind of its designer that he will be considered the author of it, although he has had no part in its actual or manual execution;42 but a mere suggestion of the subject, without a share in the design or execution, is insufficient to warrant a claim of authorship.3 While one person by employing another to produce a work may become the "proprietor" of the production," he is not the "author," "inventor," or "designer" of from the original judgment against | -(1) The person who suggests to them was accordingly dismissed. another the general ideas on which These views of the nature of author- a sketch is to be framed is not the ship and of originality, intellectual author of the sketch within the creation, and right to protection con- meaning of the act. Tate v. Fullfirm what we have already said." brook, [1908] 1 K. B. 821, 2 BRC 93, Burrow-Giles Lith. Co. V. Sarony, 14 AnnCas 428. (2) "But I do not 111 U. S. 53, 60, 4 SCt 279, 28 L. ed. see how a gentleman who is inca349 [aff 17 Fed. 591]. pable of drawing even such a very simple picture as a rough sketch of the human hand, and who did not, in fact, set pencil to paper in the matter, can be called the author of the drawing. He suggested the subject, and made such limited suggestions as to the treatment as the subject admitted of; but it seems to me that in an Act which gives copyright to drawings the author must mean a person who has at least some substantial share in putting the touches on to paper. Such was very clearly the view of every member of the Court of Appeal in Nottage v. Jackson, 11 Q. B. D. 627, and although that case might perhaps have been without decided saying what is meant by the author of a drawing or painting, and so, perhaps, in a very strict sense, the observation was extra-judicial, still it was very nearly necessary to the determination of that case, and I should follow it even if I differed from it. But as it entirely expresses my own view, I can act upon my own view with less hesitation." Kenrick v. Law

"I am of opinion, that, under that statute [8 Anne c 19], the person, who forms the plan, and who emand who employs various persons to barks in the speculation of a work, compose different parts of it, adap-rence, 25 Q. B. D. 99, 106. [b] The person who ted to their own peculiar acquireconceived the idea of ments that he, the person who so an engraving, where neither the design nor the general forms the plan and scheme of the work, and pays different artists of arrangement of the print was his inconditions, contribute to it, is the his own selection, who, upon certain vention, but who employed others to compose and execute the print, who author and proprietor of the work, designed and arranged the print and if not within the literal expression, the parts that composed it and exeat least within the equitable meancuted the same, is not entitled to a copyright, under the act of April 29, being a remedial law, is to be coning of the statute of Anne, which, 1802. Binns v. Woodruff, 3 F. Cas. strued No. 1,424, 4 Wash. C. C. 48. liberally." Per Sir John Leach in Barfield v. Nicholson, 2 L. J. Ch. O. S. 90, 102 [quot Shepherd v. Conquest, 17 C. B. 427, 443, 84 ECL 427, 139 Reprint 1140].

Al

it within the meaning of those terms as used in the
statute.45
The act of 1909, however, expressly pro-
vides that the word "author" shall include an em-
ployer in the case of works made for hire.46
[§ 150] C. Proprietors-1. In General.
though the use of the word "proprietor" in the
copyright laws is as old as the legislation on the
subject, the act of 1870 for the first time used the
word in connection with the words "author. in-
ventor, and designer," as one of the persons who
may obtain a copyright.48 It has continued to be
so used ever since." As between the author and

47

49

new, harmonious, characteristic, and graceful picture, and that plaintiff made the same entirely from his own original mental conception to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by plaintiff, he produced the picture in suit.' These findings, we think, show this photograph to be an original work of art, the product of plaintiff's intellectual invention, of which plaintiff is the author, and of a class of inventions for which the Constitution intended that Congress should secure to him the exclusive right to use, publish and sell, as it has done by section 4952 of the Revised Statutes. The question here presented is one of first impression under our Constitution, but an instructive case of the same class is that of Nottage v. Jackson, 11 Q. B. D. 627, decided in that court on appeal, August, 1883. The first section of the act of 25 and 26 Victoria, chap. 68, authorizes the author of a photograph, upon making registry of it under the copyright act of 1882, to have a monopoly of its reproduction and multiplication during the life of the author. The plaintiffs in that case described themselves as the authors

of the photograph which was pirated, in the registration of it. It appeared that they had arranged with the captain of the Australian cricketers to take a photograph of the whole team in a group; and they sent one of the artists in their employ from London to some country town to do it. The question in the case was whether the plaintiffs, who owned the establishment in London, where the photographs were made from the negative and were sold, and who had the negative taken by one of their men, were the authors, or the man who, for their benefit. took the negative. It was held that the latter was the author, and the action failed, because plaintiffs had described themselves as authors. Brett, M. R., said, in regard to who was the author: "The nearest I can come to, is that it is the person who effectively is as near as he can be, the cause of the picture which is produced, that is, the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be-the man who is the effective cause of that.' Lord Justice Cotton said: 'In my opinion, "author" involves originating, making, producing, as the inventive or master mind, the thing which is to be protected, whether it be a drawing, or a painting, or a photograph;' and Lord Justice Bowen said that photography is to be treated for the purposes of the act as an art. and the author is the man who really represents, creates, or gives effect to the idea, fancy, or imagination. The appeal of plaintiffs

41. Melville v. Mirror of Life Co., [1895] 2 Ch. 531, 535 (where Nottage v. Jackson, 11 Q. B. D. 627, was distinguished on the ground that in that case the principal who claimed the copyright was not present at the taking of the photograph. Kekewich, J., said: "In that case, no doubt, the principal was the gentleman who sent some one to Kennington Oval to take the photographs of the Australian cricketers playing there, and the court did not see its way to saying that a gentleman sitting in his room in Regent Street could be the author of a photograph which was being taken at Kennington Oval"); Wooderson v. Tuck, [1887] W. N. 209. See also infra § 149.

42. Hatton v. Kean, 7 C. B. N. S. 268, 97 ECL 268, 141 Reprint 819; Stannard v. Harrison, 24 L. T. Rep. N. S. 570.

43. Binns v. Woodruff, 3 F. Cas.
No. 1,424, 4 Wash. C. C. 48; Tate v.
Fullbrook, [1908] 1 K. B. 821, 2 BRC
93, 14 Ann Cas 428; Shepherd v. Con-
quest, 17 C. B. 427, 84 ECL 427, 139
Reprint 1140.

"We do not think it necessary in
the present case to express any opin-
ion whether, under any circum-
stances, the copyright in a literary
work, or the right of representation,
can become vested ab initio in an
employer other than the person who
has actually composed or adapted a
literary work. It is enough to say,
in the present case, that no such ef-
fect can be produced where the em-
ployer merely suggests the sub-
ject, and has no share in the de-
sign or execution of the work, the
whole of which, so far as any char-
acter of originality belongs to it,
flows from the mind of the person
employed. It
appears to us an
abuse of terms to say, that, in such
a case, the employer is the author
of a work to which his mind has not
contributed an idea: and it is upon
the author in the first instance that
the right is conferred by the statute
which creates it." Shepherd v. Con-
quest. 17 C. B. 427. 444. 84 ECL 427.
139 Reprint 1140 (per Jervis, C. J.).
[a] Suggestion of idea for sketch.

See infra § 152.

44. 45. Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39; De Witt v. Brooks, 7 F. Cas. No. 3,851; Pierpont v. Fowle, 19 F. Cas. No. 11,152, 2 Woodb. & M. 23; Kenrick v. Lawrence, 25 Q. B. D. 99; Levy v. Rutley, L. R. 6 C. P. 523 (joint authorship); Jeffreys v. Baldwin, Ambl. 164, 27 Reprint 109; Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140.

[a] A person who hires another description and scope of the work is to write a book and gives him the not the author. The literary man who writes the book and prepares it for publication is the author, and the copyright is intended to protect him and not the person who employed him. De Witt v. Brooks, 7 F. Cas. No. 3,851. Photographs see supra § 148.

46. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 62); Gaumont Co. v. Hatch, 208 Fed. 378; National Cloak, etc., Co. v. Kauffman, 189 Fed. 215.

47. See 1 U. S. St. at L. 124 c 15 88 2, 3, 4, 6; 2 U. S. St. at L. 171 c 36 §§ 1, 3; 4 U. S. St. at L. 436 c 16 § 3; 11 U. S. St. at L. 139 c 169 § 1; 13 U. S. St. at L. 540 c 126 § 2; 8 Geo. II c 13 § 1; 17 Geo. III c 57. 48. 16 U. S. St. at L. 198 c 230 § 86. 49. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 8); U. S. Rev. St. § 4952.

the proprietor, the sole right of copyright is in
the proprietor. 50

[151] 2. Who is a Proprietor.51 The word
"proprietor,"
as used in the copyright law, in-
cludes the author, inventor, or designer and his
assigns.52
The owner of the incorporeal common-
law right, as distinguished from the owner of the
physical object, such as a manuscript or a paint-
ing, is the proprietor entitled to copyright.53 But
a mere licensee is not a proprietor, and hence is not
entitled to copyright the licensed work."
54 Where

50. Dielman
892.
v. White, 102 Fed.
51. Law reports see infra § 163.
52. Dam v. Kirk la Shelle Co.,
166 Fed. 589 [aff 175 Fed. 902, 99
CCA 392, 41 LRANS 1002, 20 Ann
Cas 1173].

[a] The term "proprietor" (1) is
not limited to the person who has
a copyrightable thing made for him
under such circumstances as to be-
come the proprietor, as, for instance,
one who causes a digest to be com-
piled or a picture to be painted.
American Tobacco Co.
meister, 207 U. S. 284, 28 SCt 72,
V. Werck-
52 L. ed. 208, 12 AnnCas 595.
"Construing these statutes together,
(2)
it would seem that the word 'propri-
etor,' in the fourth section, must
practically have the same meaning
as legal assigns' in the first section,
and was designed to give to the legal
assignee of any author or authors
the right to take out the copyright
in his own name."
White Co., 190 U. S. 260, 262,
Mifflin v. R. H.
SCt 769, 47 L. ed. 1040 [aff 112 Fed.
23
1004, 50 CCA 661, 61 LRA 134 (aff
107 Fed. 708)].

20 AnnCas 1173 [aff 166 Fed. 589]; | of no great difficulty.
Ford v. Charles E. Blaney Amuse-
Yack, 116 Fed. 285, 53 CCA 563.
ment Co., 148 Fed. 642; Fraser
180. (3)
See infra
Another safe way is to
provide by express contract that the
magazine proprietor shall copyright
the contribution in his own name as
Harper v. Donohue, 144 Fed. 491 [aff
trustee for all parties in interest.
146 Fed. 1023
mem].
mem, 76
See also
CCA 678
60; and infra § 156.
cases infra note
56. Saake V.
Koppel v. Downing, 11 App. (D. C.)
135, 98 CCA 571 [rev 166 Fed. 810];
Lederer, 174 Fed.
93.

V.

"The claim seems to be that when a periodical contains pictures made by persons who have articles or publisher not transferred their rights to the periodical does not cover them. the have no reason to question the corcopyright of the rectness of the defendant's contenWe the trial court ruled in accordance tion. It is sufficient to say that involved to the jury. The verdict therewith and submitted the question rights in these pictures to the plainestablished that the artists sold their tiff." Mail, etc., Co. Co., supra. Life Pub. [a] Rule serial-(1) applied to magazine Dr. Oliver Holmes lost the copyright of the Wendell "Professor at the Breakfast Table" by licensing its serial publication in the Atlantic Monthly while retaining for himself the general ownership of it. Mifflin v. R. H. White Co., 190 U. S. 260, 263, 23 SCt 769, 47 L. ed. 61 1040 [aff 112 Fed. 1004, 50 CCA 661, LRA 134 (aff 107 (where the court said: Fed. 708)] of the Atlantic Monthly by Ticknor "The entry for the protection of the author of & Fields was evidently not intended each article therein appearing, but for their own protection, and to prevent the republication of the DecemWhile, without further explanation, ber number of the Atlantic Monthly. it might, perhaps, be inferred that the author of a book who places it lication, might be presumed to inin the hands of publishers for pubtend to authorize them to obtain a copyright in their own names, Belford v. Scribner, 144 U. S. 488, 12 SCt 734, 36 L. ed. 514; Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328, it is apparent that there such intention in this case, inasmuch was no as almost immediately after the publication of the December number of the magazine, Dr. Holmes himself entered the book under its correct title for copyright. never assigned until 1895, when it That right was the executor of the author. was turned over to the plaintiffs by(1) 54. Mifflin v. R. H. White Co., 190 Fields, as agents of Dr. Holmes, it copyright been entered by Ticknor & Had the U. S. 260, 23 SCt 769, 47 L. ed. 1040 [aff 112 Fed. 1004. 50 CCA 661, 61 is possible it might have been susLRA 134 (aff 107 Fed. 708)]; White- dicate that Ticknor & Fields were tained, but there is nothing to inSmith Music Pub. Co. v. Apollo Co., acting for any one else than them139 Fed. 427 [aff 147 Fed. 226, 77 CCA 368 (aff 209 U. S. 1, 28 SCt selves; and there is nothing to show 319, 52 L. ed. 655, 14 AnnCas 628)]; that Dr. Holmes ever assented Fraser v. Yack, 116 Fed. 285, 53 CCA impossible to see how the copyright their copyrighting his work. to 563. See also American Tobacco Co. subsequently obtained by Dr. Holmes It is v. Werckmeister, 207 U. S. 284, 28 SCt 72. 52 L. ed. 208. 12 AnnCas can derive any 595 (where this point was raised and from the fact that Ticknor & Fields additional support considered good, but the court found chose to copyright the final chapters that the claimant was a proprietor since there is nothing to indicate of the work in the Atlantic Monthly, and not a mere licensee). supra § 145. And see that he even knew that any such Assignments and licenses gener-less that he authorized it"). proceeding was contemplated, much ally see infra §§ 245-262. 55. Mifflin v. R. H. White Co., 190 also Mifflin v. Dutton, 190 U. S. 265, See U. S. 260, 23 SCt 769. 47 L. ed. 1040 23 SCt 771, 47 L. ed. 1043 (where, [aff 112 Fed. 1004. 50 CCA 661. 61 under somewhat similar LRA 134 (aff 107 Fed. 708)1: Holmes stances, the copyright was lost in circumv. Hurst, 174 U. S. 82, 19 SCt 606. 43 "The Minister's Wooing" by Harriet L. ed. 904: Mail. etc.. Co. v. Life Pub. Beecher Stowe). Co., 192 Fed. 899. 900, 113 CCA 377; to secure the author's rights in such (2) The safe way Dam v. Kirk la Shelle Co.. 175 Fed. cases is to have the copyright in 902, 99 CCA 392, 41 LRANS 1002, his contributions istered in his own separately regFor later cases, developments and changes in the law see cumulative Annotations, same title, page and note number. name a matter

Photographer infra 153.

see 53. American Tobacco Werckmeister, 207 U. S. 284, 28 SCt Co. V. 72, 52 L. ed. 208, 12 AnnCas 595; Bong v. Alfred S. Campbell Art Co., 155 Fed. 116, 83 CCA 576 [aff 214 U. S. 236, 29 SCt 628, 53 L. ed. 979, 16 AnnCas 1126]. See also supra §§ 5, 67, 146.

[§§ 150-151

56

the author or proprietor has granted to another only certain limited rights in his production, less than the whole ownership, such as the right to make only serial or magazine publication,55 dramatize or perform it, or to make other like or to limited uses of it,57 the other rights being reserved to the author or his assigns, such owner of the limited right is a mere licensee, not a proprietor, and cannot obtain a valid copyright for the author's work." 59 But if such person is authorized by the author or proprietor to take out the copyright

[b] Assignee of right to reproduce a painting-Where an artist sold to one person a picture which he had painted, reserving all rights of reproduction, and afterward assigned the exclusive right of reproduction, publication, and copyright to another person, it was held that the latter person became the "proprietor" of the painting within the meaning of that term as used in the copyright law, and that the statutory copyright therein was properly secured by him. Werckmeister v. Springer Lith. Co., 63 Fed. effect American

same

808. Το Tobacco Werckmeister, 207 U. S. 284, 28 SCt Co. v. 72. 52 L. ed. 208, 12 AnnCas 595. Employer or employee see infra § 152.

or customer

V.

which a foreign author of a dramatic [a] in the United States to another, and Rule applied.-A contract by composition granted the stage rights agreed to copyright the play in this country, did not convey the author's right of copyright, and an attempted copyright by the grantee in his own port an action by him for infringename was invalid and will not sup135, 98 CCA 571 [rev 166 Fed. 810, ment. Saake v. Lederer, 174 Fed. and dist Belford v. Scribner, 144 U. S. 488, 12 SCt 734, 36 L. ed. 514]. [b] A mere temporary licensee in the use of the manuscript of a play does not come within the meaning entitled to enter the play for copyof the term "proprietor" so as to be (D. C.) 93. right. Koppel v. Downing, 11 App.

mem.

57. Fitch v. Young, 230 Fed. 743
[aff 239 Fed. 1021
dramatic rights reserved to author).
664 mem] (right to publish with
152 CCA
"The peculiar form of assignment
part and reserving part, presents an
of rights of reproduction, conveying
interesting question which need not
be here discussed."
S. Campbell Art Co., 155 Fed. 116,
Bong v. Alfred
83 CCA 576 [aff 214 U. S.
1126].
SCt 628, 53 L. ed. 979, 16 AnnCas
236, 29
58. License distinguished from as-
signment see infra § 248.

[aff 239
59. Fitch v. Young, 230 Fed. 743
Fed. 1021 mem,
Fed. 491 [aff 146 Fed. 1023 mem. 76
664 mem]; Harper v. Donohue, 144
152 CCA
CCA 678 mem]. And see cases supra
notes 55-58.

an

Where [a] Reservation of dramatic rights. right to dramatize it, it is doubtful story to a magazine, but reserves the author sells А whether a copyright of the magazine ficient to protect the dramatic rights. containing the story will 902, 905, 906, 99 CCA 392. 41 LRANS be sufDam v. Kirk la Shelle Co., 175 Fed. 1002, 20 AnnCas 1173 [aff 166 Fed. lishing company as proprietor of the 589] (where the court said: story duly complied with the statute next question is whether the pub**The tecting the and obtained a valid copyright proquestion is raised but that the pubrequired by the statute to enter for lishing company took all the steps dramatic rights. No copyright in its Own number of the Smart Set magazine name the of the magazine. It is claimed, howcontaining the story under the title ever, that such steps accomplished no more than to obtain such proneeded as publishers of the tection as the publishing company zine. magaAssuming that Dam retained the dramatic rights to the story, there would be much force in this contention. In such a case we doubt very much whether the steps

for the common benefit of all concerned, he may do so and the copyright will be valid, as under such a contract such person is a proprietor of the legal title, holding it in trust for the protection of his own and all other interests.60 In support of the copyright such authority will readily be implied, in the absence of anything to the contrary.61 A corporation62 or an unincorporated joint stock association 63 may be a proprietor.

[152] 3. Employer or Employee. Under the early statute giving copyright to the author or his "assigns," it was held that a person who employs another to prepare a work may, by virtue of the contract of employment, and without any express assignment, become the owner of the literary property therein and be entitled to the statutory copy

by the proprietor of an encyclopedia or similar work to contribute articles to that work, and is to be paid therefor, it is the intention of the parties that the copyright shall belong to the employer. But the mere fact of employment does not necessarily make the employer the absolute owner of his employee's productions; if there is nothing in the terms and conditions of the employment and the attendant circumstances implying that the copyright shall belong to the employer it may be secured by the author.70

Work not within scope of employment. An employer cannot be considered as the proprietor of what is produced by an author independently of the duties for which the latter is employed and paid."1

In England, under the Copyright Act of 1911, the employer is entitled to the copyright only where the work was made in the course of employment under a contract of service or apprenticeship." 72 Under former statutes not so narrowly limited, the employer of an author was entitled to the copyright of works which such author was employed and paid

brary, could not enjoin a publication of photographs of the panels which were taken with the consent of the proper government officials, although he had duly entered the panels for copyright).

[b] An engraver in the employ of the government can have no copyright in a chart prepared for the government. Copyright, 7 Op. Atty.Gen. 656. Photographer or customer see infra

§ 153.

69. Aflalo v. Lawrence, [1904] A. C. 17 [rev [1903] 1 Ch. 318 (aff [1902] 1 Ch. 264)] (express agreement unnecessary); Lamb v. Evans, [1893] 1 Ch. 218; Sweet v. Bennings, 16 C. B. 459, 81 ECL 459, 139 Reprint 838. [a] The English Copyright Act of 1911 has perhaps changed this rule by providing that the author shall be the owner of the copyright except only where the work was produced under a contract of service. See Copinger Copyright (5th ed) p 207. And see supra § 144; infra this section.

70. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547; Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39; Boucicault v. Fox, 3 F. Cas. No. 1,691, 5 Blatchf. 87; Roberts v. Myers, 20 F. Cas. No. 11.906, Brunn. Coll. Cas. 698; Levy v. Rutley, L. R. 6 C. P. 523; Jefferys v. Baldwin, Ambl. 164, 27 Reprint 109; Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140; Sweet v. Benning, 16 C. B. 459, 81 ECL 459, 139 Reprint 838; Hereford v. Griffin, 16 Sim. 190, 39 EngCh 190, 60 Reprint 846.

69

[a] Necessity of contract.-"The title to literary property is in the author whose intellect has given birth to the thoughts and wrought them into the composition, unless he has transferred that title, by contract, to another." Boucicault v. Fox. 3 F. Cas. No. 1,691, 5 Blatchf. 87, 95. [b] A court reporter, although a sworn public officer receiving a fixed salary for his labors, is not, in the absence of statute, deprived of any privilege of taking out a copyright which he would otherwise have. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177. 32 L. ed. 547.

to produce, subject to the conditions imposed by the statute.73 Many of the decisions under these statutes have been made obsolete by the changes in the law, but some of them still have value and are of general application, particularly on the questions of the contract and intent of the parties under particular circumstances. By express provision, copyright in portraits and engravings executed pursuant to order for a valuable consideration belongs to the person who gave the order." Where the work is an article or contribution to a newspaper, magazine, or other similar periodical, in the absence of any agreement to the contrary the author may restrain publication otherwise than in a newspaper, magazine, or periodical.75 Prior statutes, in such cases, likewise prohibited "separate publication" by the employer and gave that right to the author after the expiration of twenty-eight years for fourteen years.

72. Byrne v. Statist Co., [1914] 1 K. B. 622. See also supra § 144.

[a] Editorial employee of newspaper.-Plaintiff who was permanently employed on the editorial staff of a newspaper was specially employed and paid by the proprietors of the paper to translate and summarize a speech reported in a foreign language, for the purpose of publication as an advertisement in their paper for a foreign state, and this work was done entirely in his own time and independently of his ordinary duties. The summarized translation was published in the paper as an advertisement with the words "Translated from the Portuguese language by F. D. Byrne" printed at the end. Such translation was an "original | literary work," within § 1 of the Copyright Act of 1911, of which plaintiff was the author, and plaintiff was the Owner of the copyright therein within § 5. Byrne v. Statist Co., [1914] 1 K. B. 622.

73. St. 5 & 6 Vict. c 45 § 18; Lawrence Aflalo, [1904] A. C. 17, 1 BRC 314 [appr Sweet v. Benning, 16 C. B. 459, 81 ECL 459, 139 Reprint 838] (no implied assignment until payment in case of contribution to periodical); Ward, Lock & Co., Ltd. v. Long, [1906] 2 Ch. 550; Stackemann v. Paton, [1906] 1 Ch. 774; Petty v. Taylor, [1897] 1 Ch. 465; Lamb v. Evans, [1893] 1 Ch. 218; Marzials v. Gibbons, L. R. 9 Ch. 518; Trade Auxiliary Co. v. Middlesborcugh, etc., Tradesmen's Protection Assoc., 40 Ch. D. 425; Walter v. Howe, 17 Ch. D. 708; Grace v. Newman, L. R. 19 Eq. 623, 7 ERC 86; Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140; Sweet v. Benning, 16 C. B. 459, 81 ECL 459, 139 Reprint 838; Hatton v. Kean, 7 C. B. N. S. 268, 97 ECL 268, 141 Reprint 819; Cary v. Longman, 1 East 358, 102 Reprint 138, 7 ERC 78: Smith v. Johnson, 4 Giffard 632, 66 Reprint 859; Cox v. Cox, 11 Hare 118, 45 EngCh 118, 68 Reprint 1211; Mayhew v. Maxwell, 1 Johns. & H. 312, 70 Reprint 766; Browne v. Cooke, 11 Jur. 77; Sweet v. Shaw, 3 Jur. 217; Delfe v. Delamotte, 3 Kay & J. 581, 69 Reprint 1241; Collingridge v. Emmott, 57 L. T. Rep. N. S. 864; Wallenstein v. Herbert, 16 L. T. Rep. N. S. 453; Strahan v. Graham, 16 L. T. Rep. N. S. 87 [aff 17 L. T. Rep. N. S.

[b] Lord Halsbury's summary.-457]; Hereford v. Griffin, 16 Sim. 190, "The author of a work is in general 39 EngCh 190. 60 Reprint 846; Richthe first owner of the copyright ardson v. Gilbert, 1 Sim. N. S. 336, therein, but (i.) where, in the case 40 EngCh 336, 61 Reprint 130; Barof an engraving, photograph, or por- field v. Nicholson, 2 Sim. & St. 1, 1 trait, the plate. ... or other original EngCh 1, 57 Reprint 245; Nicol v. was ordered by some other person, Stockdale, 3 Swanst. 687, 36 Reprint and was made for valuable considera- 1023; Chantrey V. Dey, 28 T. L. tion in pursuance of that order, then, R. 499; Nisbet v. Golf Agency, 23 in the absence of any agreement to T. L. R. 370; Geissendorfer v. Menthe contrary, the person by whom delssohn, 13 T. L. R. 91; Trade Auxilsuch plate or other original was oriary V. Jackson, 4 T. L. R. 130; dered is the first owner of the copy- Wyatt v. Barnard, 3 Ves. & B. 77, 35 right (Copyright Act, 1911 [1 & 2 Reprint 408; Black v. Imperial Book Geo. 5, c. 46]), s. 5 (1) (a); (ii) Co., 5 Ont. L. 184 [app dism 8 Ont. where the author was in the employ- L. 9 (dism app 35 Can. S. C. 488)]. ment of some other person under a Photographer or customer see infra contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed is, in the absence of any agreement to the contrary, the first owner of the copyright; but where the work is an article or other contribution to a newspaper, magazine, or similar periodical, there is in the absence of any agreement to the contrary, reserved to the author a right

76. Copyright Act, 1842 (5 & 6 Vict. c 45 18); Trade Auxiliary Co. v. Middlesborough, etc., Tradesmen's Protection Assoc., 40 Ch. D. 425; Smith v. Johnson, 4 Giffard 632, 66 Reprint 859; Mayhew v. Maxwell, 1 Johns. & H. 312, 70 Reprint 766.

71. Roberts v. Myers, 20 F. Cas. No. 11,906, Brunn. Coll. Cas. 698. See also supra § 29.

[c] An agreement to write a play for another, and to act in it, with a share in the profits as compensation, does not create a legal or equitable title in the latter which will prevent the author from taking out a copyright. Boucicault v. Fox, 3 F. Cas. No. 1,691, 5 Blatchf. 87.

Under the Canadian Copyright Act the employer for whom a work is made for hire is entitled to the copyright in the absence of any reservation of it

[a] Play produced by person employed as stage manager and actor Where it appeared that Boucicault, an actor and dramatic author, while in the employment of Stewart as a performer and stage manager, verbally agreed with the latter to write a play, and that it should be performed at Stewart's theater so long as it should continue to draw good audiences, it was held that Boucicault, and not Stewart, was the proper person to take out the copyright. Roberts v. Myers, 20 F. Cas. No. 11,906.

to restrain the publication of the work, otherwise than as part of a newspaper, magazine or similar neriodical (ibid., s. 5 (1) (b)." Halsbury L. Eng. Suppl. [1917] p 362.

§ 153.
74.

Copyright Act, 1911 (1 & 2 Geo. V c 46 § 5 (1)).

75. Copyright Act, 1911 (1 & 2 Geo. V c 46 § 5 (1) (b)).

to the employee."7

79

[153] 4. Photographer or Customer. In the United States the right to obtain a copyright in photographs follows the common-law property right therein.78 The photographer is entitled to the copyright as author and proprietor, where the photograph is taken at his own instance, without any contract of employment." But where the photographer is employed to produce the picture, the customer is entitled to the copyright as being the proprietor of it.80 Celebrities, requested by photographers to give sittings without any charge being made for the taking of the photographs, do not acquire the copyright in the photographs81 notwithstanding they subsequently purchase copies.s

82

English statutes. In the case of an engraving, photograph, or portrait, the act of 1911 provides

77. Life Pub. Co. v. Rose Pub. Co., 12 Ont. L. 386, 8 OntWR 28, 7 OntWR 337; Frowde v. Parrish, 27 Ont. 526 [app Anglo-Canadian Music Publishers Assoc. v. Winnifrith, 15 Ont. 1641.

[a] "Actual payment is not required to be proved under our act: Richardson v. Gilbert, 1 Sim. N. S. 336." Frowde v. Parrish, 27 Ont. 526, 528.

78. 79. 324.

80. Press Pub. Co. v. Falk, 59 Fed. 324; Pollard v. Photographic Co., 40 Ch. D. 345.

[a] Rule applied.—A photographer employed by the parents to photograph the nude body of a deformed child who copyrighted and published the photograph without the customer's consent is liable in damages to them. Douglas v. Stokes, 149 Ky. 506, 149 SW 849, AnnCas1914B 374, 42 LRANS 386.

81. Press Pub. Co. v. Falk, 59 Fed. 324.

[a] Photographer as proprietor of photograph-Where a photographer photographed an actress in her stage character, with the understanding that she should have all the copies which she desired free of charge to do with as she pleased, it was held that the photographer was the author and proprietor of the photograph and was entitled to secure the statutory copyright therein. Press Pub. Co. v. Falk, 59 Fed. 324.

82. See Melville v. Mirror of Life Co., [1895] 2 Ch. 531; Ellis v. Marshall, 64 L. J. Q. B. 757 (both cases decided under the English statute). Like rule under English statute see infra note 86.

See supra § 30.

[a] Statutory changes.-"The differences between the Act of 1911 and the Act of 1862 are (1) that under the Act of 1911 writing is not rePress Pub. Co. v. Falk, 59 Fed. quired if the artist desires to retain his copyright, the proviso only says in the absence of any agreement to the contrary'; (2) that the 1862 Act refers to a work 'made' for another, and the Act of 1911 speaks of a plate or original 'ordered' by some other person; (3) that the 1862 Act uses the expression 'a good or a valuable consideration,' whereas the Act of 1911 only has the words 'valuable consideration.'" Copinger Copyright (5th ed) pp 113, 114.

[b] Good consideration.-A photographer took certain photographs of a private school, it being understood that he did so speculatively and at his own risk, and that the school proprietor was to be at liberty afterward to buy, or not to buy, copies entirely at his own pleasure. The school proprietor, on this understanding, admitted the photographer into the interior of his private house, indicated to him what seemed the best points of view, placed the cricket eleven, and assembled the whole school into a group. It was held that under these circumstances there was such "good" consideration moving from the school proprietor to the photographer for the taking of the photographs as was sufficient to transfer the copyright in the photographs from their "author," the photographer, to the school proprietor, under the terms of the proviso in § 1 of the Fine Arts Copyright Act of 1862. Stackemann v. Paton, [1906] 1 Ch. 774.

86. Boucas v. Cooke, [1903] 2 K.
B. 227.

87. Assigns defined see Assigns
5 C. J. p 1310; Assignments § 4.
88. See supra § 33 et seq.
89. Act March 4, 1909 (35 U. S. St.
at L. 1075 c 320 § 8); U. S. Rev. St.
§ 4952.

83. See supra § 144.

84. Fine Arts Copyright Act, 1862 (25 & 26 Vict. c 68 § 1); Boucas v. Cooke, [1903] 2 K. B. 227; Stackemann v. Paton, [1906] 1 Ch. 774; Melville v. Mirror of Life Co., [1895] 2 Ch. 531; McCosh v. Crow, 5 F. (Ct. Sess.) 670; Ellis v. Marshall, 64 L. J. Q. B. 757 (mere permission to take a photograph is not a valuable consideration within the statute).

that, in the absence of any agreement to the contrary, the person by whom the plate or other original was ordered, and for whom it was made for a valuable consideration, pursuant to such order, shall be the first owner of the copyright.83 This was substantially the rule under the former statute.84 Where no consideration is given, the copyright belongs to the photographer notwithstanding a subsequent purchase of copies.86

[154] D. Assigns.87 The common-law property in any intellectual production may be assigned by the author, inventor, or designer, before the statutory copyright which may be had therein is obtained,88 in which case the copyright may, pursuant to the express terms of the statutes,89 be taken out by the assignee.90 Under the English statutes also an assignee is entitled to copyright.91 An author

[a] Copyright in negative. Where a photograph is in the ordinary way taken by a photographer for a sitter at the request of the sitter, and on a promise by him, express or implied, to pay for it, the negative of the photograph is, within the true meaning of the proviso to § 1 of the Fine Arts Copyright Act of 1862, "made or executed for or on behalf of any other person for a good or a valuable consideration," and the copyright belongs to the sitter, notwithstanding the photographer retains the property in the negative. Boucas Cooke, [1903] 2 K. B. 227.

V.

[b] Photograph of wife and children. Where the true inference from the facts was that the wife acted as the agent of her husband in having herself and children photographed, the husband was entitled to prevent

the photographer from exhibiting the
photograph in public. Stedall V.
Houghton, 18 T. L. R. 126.

85. Boucas v. Cooke, [1903] 2 K. B. 227; Stackemann v. Paton, [1906] 1 Ch. 774; Melville v. Mirror of Life Co., [1895] 2 Ch. 531; Ellis v. Marshall, 64 L. J. Q. B. 757.

[a] "Assigns" construed. "It seems clear that the word 'assigns' in this section is not used as descriptive of the character of the estate which the author, inventor, designer or proprietor' may acquire under the statute, for the 'assigns' of any such person, as well as the persons themselves, may, 'upon complying with the provisions of this chapter,' have the sole liberty of printing, publishing and vending the same. This would seem to demonstrate the intention of Congress to vest in 'assigns.' before copyright, the same privilege of subsequently acquiring complete statutory copyright as the original author, inventor, designer or proprietor has. Nor do we think this

result is qualified because the statute gives to assigns, together with the right of publishing, vending, etc., the right of 'completing, executing and finishing' the subject-matter of copyright." American Tobacco Co. v. Werckmeister, 207 U. S. 284, 297, 28 SCt 72, 52 L. ed. 208, 12 AnnCas 595 [quot Bong v. Alfred S. Campbell Art Co., 214 U. S. 236, 245, 29 SCt 628, 53 L. ed. 979, 16 AnnCas 1126].

90. Bong v. Alfred S. Campbell Art Co., 214 U. S. 236, 29 SCt 628, 53 L. ed. 979, 16 AnnCas 1126; American Tobacco Co. v. Werckmeister, 207 U. S. 284, 28 SCt 72, 52 L. ed. 208, 12 AnnCas 595 [aff 146 Fed. 375, 76 ĆCA 647]; Mifflin v. Dutton, 190 U. S. 265, 23 SCt 771, 47 L. ed. 1043 [aff 112 Fed. 1004, 50 CCA 661, 61 LRA 134]; Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547; Paige v. Banks, 13 Wall. (U. S.) 608, 20 L. ed. 709 [aff 18 F. Cas. No. 10,671, 7 Blatchf. 152]; Werckmeister v. Pierce, etc., Mfg. Co., 63 Fed. 445 [rev on other grounds 72 Fed. 54, 18 CCA 431]; Black v. Henry G. Allen Co., 42 Fed. 618, 9 LRA 433; Cowen V. Banks, 6 F. Cas. No. 3,295, 24 HowPr (N. Y.) 72; Folsom v. Marsh, 9 F. Cas. No. 4,901, 2 Story 100; Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1: Little v. Gould, 15 F. Cas. Nos. 8,394, 8,395, 2 Blatchf. 165, 362; Parton v. Prang, 18 F. Cas. No. 10,784, 3 Cliff. 537; Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328.

[a] Rule applied.An instrument providing that the proprietor of an unpublished picture thereby transferred the "copyright" in said picture to a named person is sufficient to transfer the right to apply for and obtain a copyright thereon by the assignee. American Tobacco Co. v. Werckmeister, 207 U. S. 284, 28 SCt 72, 52 L. ed. 208, 12 AnnCas 595.

91. Cumberland v. Planche, 1 A. & E. 580, 28 ECL 276, 110 Reprint 1329 (dramatic copyright); Cocks v. Purday, 5 C. B. 860, 57 ECL 860, 136 Reprint 1118; Jefferys v. Boosey, 4 H. L. Cas. 815, 10 Reprint 681; Sweet v. Shaw, 3 Jur. 217; D'Almaine v. Boosey, 4 L. J. Exch. 21; Colburn v. Duncombe, 9 Sim. 151, 16 EngCh 151, 59 Reprint 316; Thompson v. Symonds, 5 T. R. 41, 101 Reprint 23; Life Pub. Co. v. Rose Pub. Co., 12 Ont. L. 386, 8 OntWR 28, 7 OntWR 337 (construing the English statute).

[a] Assignment before publication.-"The statute of Anne clearly contemplates a first publication by the assignee as sufficient to give him the monopoly-and, in point of fact, I believe that nothing is more common than that the booksellers should take an assignment of the copyright, and publish themselves as proprietors, so as to vest the monopoly in them during the term. The words of the statute, that the author or his assignee shall have the sole liberty, etc.. from the day of the first publication, seem to me to show that the assignee may himself publish, so as